Taylor Instrument Companies v. Fawley-Brost Co.

• Decision Date: 15 November 1943
• Docket Number: No. 8298.,8298.
• Citation: 139 F.2d 98
• Parties: TAYLOR INSTRUMENT COMPANIES v. FAWLEY-BROST CO.
• Court: U.S. Court of Appeals — Seventh Circuit

139 F.2d 98 (1943)

TAYLOR INSTRUMENT COMPANIES v. FAWLEY-BROST CO.

No. 8298.

Circuit Court of Appeals, Seventh Circuit.

November 15, 1943.

Albert I. Kegan and Esther Oswianza Kegan, both of Chicago, Ill., for appellant.

Edward S. Rogers, William T. Woodson and James H. Rogers, all of Chicago, Ill. (D. Clyde Jones, of Rochester, N. Y., of counsel), for appellee.

Before MAJOR and MINTON, Circuit Judges, and LINDLEY, District Judge.

MAJOR, Circuit Judge.

Plaintiff brought this action to recover damages for and to enjoin alleged copyright and trademark infringement and alleged unfair competition in connection with the manufacture and sale of charts used in recording machinery. Defendant denied the charges and counterclaimed for certain relief, including a declaratory judgment that such charts were not copyrightable. The court below decided all issues in favor of the plaintiff and entered an interlocutory judgment from which defendant appeals.

Plaintiff is a manufacturer and vendor of a recording thermometer which is a combination of numerous elements, including a clock which shows the time, a thermometer which measures and indicates the temperature, and a writing machine which draws upon the chart a graphical record disclosing the hourly temperature. The chart is circular in form and about ten inches in diameter. It has arc lines extending from the center outwardly by which the time is indicated, and lines extending in a circle around the chart by which the temperature is indicated. The writing machine feature includes a pen or stylus which, co-acting with other elements of the machine, produces a traced line which indicates the temperature at different times during any desired period. The chart upon which this record is made is commonly known in the trade as such, although it appears more accurate to describe it as a paper dial.

Plaintiff prints its copyright notice upon charts manufactured by it, in conformity with copyright certificates issued by the United States Registrar of Copyrights. Plaintiff relies upon eighteen of such copyright certificates out of several hundred which it has procured. Plaintiff also prints upon its charts its registered trademark "Taylor" and a number, which indicates the type of machine with which the chart is to be used.

Charts manufactured and sold by the defendant are admittedly copied from plaintiff's charts in so far as the circular and arc lines are concerned. Defendant omits, however, plaintiff's trademark and copyright notice.¹ Defendant prints on its charts in bold-faced type, "Fawley-Brost Co., Chicago." It also prints upon the chart a number for the purpose of indicating the type of machine, whether manufactured by plaintiff or others, for which the chart is designed. This means that defendant's number corresponds with plaintiff's number where the charts are manufactured for the same type of plaintiff's machine. Some of defendant's charts also bear the letter "T," which indicates that they are designed for use on a machine manufactured and sold by the plaintiff.

The statement thus made appears sufficient for a consideration of defendant's contention that plaintiff's copyrights are invalid and of no effect. (Other facts will be subsequently stated relative to the charge of trademark infringement and unfair competition.) Plaintiff, as might be expected, relies heavily upon the findings and conclusion of the trial court. It may be said, so we think, that there is little, if any, dispute concerning the facts of the case. The dispute is largely dependent upon the conclusion to be drawn from such facts.

Art. 1, Sec. 8, Clause 8 of the Constitution of the United States empowers Congress "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." In the exercise of the power thus conferred, Congress has legislated with reference to copyrights (Title 17 U.S.C.A. § 1 et seq.), thereby furnishing protection to "Authors" in their "Writings," and has legislated with reference to patents (Title 35 U.S.C.A. § 31 et seq.), thereby furnishing protection to "Inventors" in their "Discoveries." Thus it appears that Congress has provided two separate and distinct fields of protection, the copyright and the patent. In the former (Sec. 4), it has placed "all the writings of an author," and in the latter (Sec. 31), inventions and discoveries of "any new and useful art, machine, manufacture * * * or any new and useful improvements thereof * * *." While it may be difficult to determine in which field protection must be sought, it is plain, so we think, that it must be in one or the other; it cannot be found in both. In other words, there is no overlapping territory, even though the line of separation may in some instances be difficult of exact ascertainment.

Defendant bottoms its contention that the charts in suit are not the proper subject of copyright, largely upon the oft-cited and much quoted case of Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841, and cases which have followed that decision. There, the distinction between copyright and patent protection is stated thus (101 U.S. at page 105, 25 L.Ed. 841): "The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured at all, by letters-patent."

The reason assigned by the court for such distinction is (101 U.S. at page 102, 25 L.Ed. 841): "To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the government."

In Brief English Systems, Inc. v. Owen, et al., 2 Cir., 48 F.2d 555, 556, the court stated: "* * * it may be said that the way to obtain the exclusive property right to an art, as distinguished from a description of the art, is by letters patent and not by copyright." This same distinction has been recognized in Arnstein v. Edward B. Marks Music Corp., 2 Cir., 82 F.2d 275, Amberg File & Index Co. v. Shea Smith & Co., 7 Cir., 82 F. 314, and in Dymow v. Bolton, et al., 2 Cir., 11 F.2d 690, 691. In the latter case, the court said: "Just as a patent affords protection only to the means of reducing an inventive idea to practice, so the copyright law protects the means of expressing an idea * * *."

Plaintiff points out that Congress in 1909, subsequent to the decisions in Baker and kindred cases, amended Sec. 5 of the Copyright Act by including Par. (i), "Drawings or plastic works of a scientific or technical character," and that such decisions are no longer controlling. In the absence, however, of any authority to the contrary, we are of the view that the field of copyright protection was not enlarged by this amendment. The field is still confined to "the writings of an Author." That such is the case is evident from the concluding paragraph of Sec. 5, which reads: "The above specifications shall not be held to limit the subject matter of copyright as defined in section 4 of this title * * *." Furthermore, the pronouncement of the Baker case has recently been recognized and applied by two District Courts. Clair v. Philadelphia Storage Battery Co., 43 F.Supp. 286, and Muller v. Triborough Bridge Authority, 43 F.Supp. 298. Therefore, we are of the view that the rule of the Baker case is the rule of today. None of the cases relied upon by the plaintiff announces a contrary rule. None of them, so far as we are able to ascertain, has sustained a copyright upon an object which did not teach or convey information.

This brings us to a consideration of whether plaintiff's copyrighted chart is an object of explanation or an object of use. If the former, it is subject to copyright protection; if the latter, it is not entitled to such protection, but the same must be obtained, if at all, by letters-patent. The character of the chart is aptly stated in a letter written by plaintiff's counsel to defendant's counsel shortly prior to the commencement of the instant suit. It states, "The chart in question is, in effect, a replaceable dial which cooperates with the pointer or index of the instrument, to indicate a temperature reading. The fact that this pointer carries an inked stylus to make a record of this indicated temperature, does not change the replaceable dial into a blank book."

The proof, as well as an examination of plaintiff's recording thermometer, including its chart, leaves no room for doubt but that the latter is a mechanical element of the instrument of which it is an integral part. The chart is as indispensable to the operation of a recording thermometer as are any of the other elements. They are interdependent. As was stated by plaintiff's president: "I would say that you must have the pen and you must have the chart and the two together will determine the temperature."

Notwithstanding plaintiff's rather feeble argument to the contrary, the chart neither teaches nor explains the use of the art. It is an essential element of the machine; it is the art itself. It is our judgment that plaintiff's charts are not the proper subject of copyright and that the recognition of an exclusive property right therein would be, in the words of the Supreme Court in the Baker case, "a surprise and a fraud upon the public."

Defendant introduced some twenty-five patents, the subject matter of which was recording thermometers which displayed representations of charts. All of...